throbber
—_‘?§:S_UMMER§TREFT BOSTQN MA 02110-1618
`T 617 443 9292 F 617 443 0004 WWW.BROMSUN.COM
`
`$310M BERG >2 s U N STEIN m
`
`JOHN F WARD
`T 617 443 9292 X277
`JWARD@BROMSUN.COM
`
`TTAB
`
`August 15, 2005
`
`Commissioner for Trademarks
`
`BOX TTAB
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re OPPOSER’S NOTICE OF RELIANCE
`
`Opposer:
`Applicant:
`Mark:
`
`Vertex Pharmaceuticals Incorporated
`Nutrex Research, Inc.
`VITRIX
`
`Serial No:
`78/201,055
`Opposition No: 91 -1 59,280
`Our File:
`1618/559
`
`Dear Sir/Madam:
`
`Enclosed for filing in connection with the above—referenced matter, please find Opposer’s
`Notice of Reliance with exhibits A-R.
`
`Thank you for your attention to this matter.
`
`Sincerely,
`
`me
`
`John F. Ward
`
`J FW/cth
`
`Enclosures
`
`cc:
`
`Stephen Nesbitt, Esq.
`Ava K. Doppelt, Esq.
`
`01618/00559 4250001
`
`‘
`|llllllIlllll||||"HIIlllllllllllllllllllllllllll
`
`0880-2005
`US. Patent & TMOfc/TM Mail cht D1. #77
`
`ATTORNEYS AT LAW
`
`
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`VERTEX PHARMACEUTICALS
`
`INCORPORATED
`
`Opposer,
`
`v.
`
`NUTREX RESEARCH, INC.
`
`Applicant.
`_—)
`
`VVVVVVVVVVV
`
`Opposition No. 91-159280
`
`OPPOSER’S NOTICE OF RELIANCE
`
`Pursuant to 37 C.F.R. §§ 2.1200)(3)(i) and 2.122(e), Opposer, Vertex Pharmaceuticals,
`
`Inc. (“Opposer”), hereby makes of record and notifies all parties to this proceeding of Opposer’s
`
`reliance on the documents found at Tabs A-R and filed herewith:
`
`1.
`
`An original and copy of the following certified trademark registrations, issued by
`
`The United States Patent and Trademark Office, showing both the current status and current tile
`
`to each:
`
`A.
`
`B.
`
`C.
`
`D.
`
`US. trademark registration No. 1,630,448 for the mark VERTEX.
`Tab A.
`
`U.S. trademark registration No. 2,201,590 for the mark VERTEX.
`Tab B.
`
`U.S. trademark registration No. 2,704,913 for the mark VERTEX.
`Tab C.
`
`U.S. trademark registration No. 2,578,974 for the mark VERTEX
`(plus design). Tab D.
`
`2.
`
`An original and copy of the following certified trademark application, issued by
`
`The United States Patent and Trademark Office, showing both its current status and current tile:
`
`
`
`

`

`
`
`
`
`A.
`
`trademark application Serial No. 76/339,906 for the mark
`US.
`VERTEX (plus design). Tab E.
`
`3.
`
`Applicant’s Responses to Opposer’s First Request for Admissions Nos. 1, 2, 3, 4,
`
`5, 6, 7, 11, 13, 12, 17, 18, 19, 21, 22, 23, 24, 25, 26, 29, 32, 33, 34, including documents
`
`referenced by Applicant in responses Nos. 2 (Doc. No. Nutrex 00017), 3 (Doc No. Nutrex
`
`00019, excerpt) and 24 (Document No. VER 005477-5478). See § 2.1200)(3)(i). See Tabs F-I.
`
`4.
`
`Answer and Objections of Applicant to Opposer’s First Set of Interrogatories to
`
`Applicant, Answer No. 8. See 37 C.F.R. § 2.1200)(3)(i). Tab J.
`
`5.
`
`The dictionary definition of testosterone. American Heritage Dictionary of the
`
`English Language (Third Edition) p. 1855. Tab K.
`
`6.
`
`Printouts from the USPTO’s TESS database which are examples of third party
`
`pharmaceutical companies seeking trademark protection for marks used in connection with
`
`dietary supplements. Tab L.
`
`7.
`
`Excerpt from POZ, September 2004, including an advertisement for Lexiva®, a
`
`product used in the treatment of HIV infection and marketed in connection with Opposer’s
`
`marks. Tab M.
`
`8.
`
`Packaging for the product Agcnerase®, a product used in the treatment of HIV
`
`infection and marketed in connection with Opposer’s marks. Tab N.
`
`9.
`
`An abstract of an article which appeared in the Journal of the American Medical
`
`Association, titled, Testosterone Replacement and Resistance Exercise In HIV-Infected Men With
`
`Weight Loss and Low Testosterone Levels, dated Feb. 9, 2000, and downloaded from the website
`
`maintained by the National Center
`
`for Biotechnology Information’s National Library of
`
`Medicine. This abstract is an example of publicly available information which associates low
`
`testosterone levels with weight lifting and the HIV infection. Tab 0.
`
`

`

`10.
`
`An article titled Testosterone Helps HIV-Infected Women, dated April 27, 2004
`
`which appeared in the on-line publication HealthDay News and downloaded from the search
`
`engine Yahoo. This article is an example of publicly available information which discusses
`
`testosterone supplements as a means of combating the loss of muscle mass among HIV infected
`
`women. Tab P.
`
`11.
`
`The following pages of Vertex Pharmaceuticals’ Rule 30(b)(6) deposition of
`
`Nutrex Research, dated January 7, 2005: 1-14; 32; 40-43; 60-61; 75-99; 108—129; 136; 142—143;
`
`160; 165; 172-181; 188-195. Tab Q
`
`12.
`
`The following exhibits from Vertex Pharmaceuticals’ Rule 30(b)(6) deposition of
`
`Nutrex Research, dated January 7, 2005, which are referenced in the pages cited in paragraph 11,
`
`above: Exhibit Nos. 5, 8, 11 (excerpt), 14, 15, 16, and 19. Tab R.
`
`Dated: Boston, Massachusetts
`
`August 15, 2005
`
`Respectfully submitted,
`
`VERTEX PHARMACEUTICALS, INC.
`by its attorneys,
`
`\Ls
`Lisa M. Tittemore
`
`John F. Ward
`
`Bromberg & Sunstein LLP
`125 Summer Street
`
`Boston, MA 02110
`
`(617) 443—9292
`
`
`
`
`
`
`
`

`

`_
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States Postal
`Service as first class mail in an envelope addressed: BOX TTAB, Commissioner for Trademarks,
`2900 Crystal Drive, Arlington, VA 22202-3513, on the above date.
`
`Adlai
`
`John F. Ward
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served the foregoing document upon Applicant on the above date
`by sending a true copy to Counsel for Applicant, Ava K. Doppelt, Esq., Allen, Dyer, Doppelt,
`Millbrath, & Gilchrist, P.A., 255 South Orange Ave., Suite 1401, Orlando, FL, 32802, by first-
`class mail.
`
`John F. W
`
`01618/00559 419783.l
`
`
`
`
`
`

`

`
`
`
`
`EXHIBIT A
`
`

`

` 1347360
`
`*‘srvxd;:.i
`:'
`lltIllllHIIIIHHIHNHIU[WWW llllllilllllllllllllllllllllmlilllllllll
`
`H
`
`llll|l|Illllllllll|lllllllIlIlIllllllllllllllllllllllllll
`
`
`
`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
`
`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`
`THEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`
`
`
`
`PATENT AND TRADEMARK OFFICE.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`“HUB ELLE mWE
`UNITED STATES DEPARTMENT OF COMMERCE
`
`
`United States Patent and Trademark Office
`
`
`
`July 28, 2005
`r,
`:
` THE ATTACHED U.S. TRADEMARK REGISTRATION 1,630,448 IS
`
`REGISTERED FOR A TERM OF 10 YEARS FROM January 01, 1991
`
`1st RENEWAL FOR A TERM OF 10 YEARS FROM Januaty 01, 2001
`SECTION 8 & 15
`
`
`
`
`
`
`
`SAID RECORDS SHOW TITLE TO BE IN:
`
`REGISTRANT
`
`By Authority of the
`
`Certifying Officer
`
`_.a
`we
`
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`Vertex v. Nutrex
`
`
`Opp. No. 91-159280
`
`
`Opposer’s Ex. A
`
`QS!DA—4-_9'.lRV
`
`
`‘'-—g“.5:-v"--:-;w.,—‘.&‘r-«.r-=.l‘.
`_
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`
`
`
`
`
`.vI‘v‘ufl-‘Vy-‘‘9‘!w‘ww‘‘9‘vau“3“:1n‘vv‘w‘aI-u.u-n'‘4-s-<<4.4l,V.
`
`
` ulnan
`
`

`

`Int. Cl.: 42
`
`Prior U.s. C1.: 100
`.
`_
`Umted States Patent and Trademark Office
`
`Reg. No. 1,630,448
`Registered Jan. 1, 1991
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`VERTEX
`
`VERTEX PHARMACEUTICALS INCORPORAT-
`ED (MASSACHUSETTS CORPORATION)
`4o ALLSTON STREET
`CAMBRIDGE, MA 021394211
`
`FIRST USE
`5-3—1989.
`
`5-3-1989;
`
`IN COMMERCE
`
`SER. NO. 73—839,157. FILED 11—14—1989.
`
`FOR: PHARMACEUTICAL RESEARCH,
`CLASS 42 (US. CL. 100).
`
`IN
`
`MARY KAY MCDONALD, EXAMINING AT-
`TORNEY
`
`
`
`

`

`El liltllllflll vllllll|l||l|I|Illlt‘llIl|llIII[I|l|||ll1ll|lll|l|||l|ll
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`
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`
`.
`
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`
`i
`
`'
`
`"'
`
`
`
`July 28, 2005
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 1,630,448 IS
`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
`EFFECT WITH NOTATIONS OFALL STATUTORYACTIONS TAKEN
`THEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE.
`
`REGISTERED FOR A TERM OF 10 YEARS FROM January 01, 1991
`1st RENEWAL FOR A TERM OF 10 YEARS FROM January 01, 2001
`SECTION 8 & 15
`SAID RECORDS SHOW TITLE TO BE IN:
`REGISTRANT
`
`:_
`
`Egg;
`
`
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`
`United States Patent and Trademark Office
`
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`
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`
`
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`I[mlINN/Ir),1
`
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`

`

`Int. CL: 42
`
`Prior U.S. CL: 100
`
`Reg. No. 1,630,448
`.
`
`United States Patent and Trademark Office Registered Jan. 1, 1991
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`VERTEX
`
`VERTEX PHARMACEUTICALS INCORPORAT-
`ED (MASSACHUSETTS CORPORATION)
`4o ALLSTON STREET
`
`FIRST USE
`5-3—1989.
`
`5—3-1989;
`
`IN COMMERCE
`
`-
`
`CAMBRIDGE, MA 021394211
`
`1‘
`
`SER. NO. 734339.157, FILED 11—14—1989.
`
`FOR: PHARMACEUTICAL RESEARCH,
`CLASS 42 (US. CL. 100).
`
`IN
`
`MARY KAY MCDONALD, EXAMINING AT-
`TORNEY
`
`
`
`

`

`
`
`
`
`EXHIBIT B
`
`

`

`1347362
`
`
`
`
`
`HHH \vam \m n m mun:
`
`IHIU HHHII
`
`II
`
`U
`A
`
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`
`'
`
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`
`l {0
`
`W; @2131?WE
`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`July 28, 2005
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 2,201,590 IS
`
`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
`
`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`
`THEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`
`PATENT AND TRADEMARK OFFICE.
`
`REGISTERED FOR A TERM OF 10 YEARS FROM November 03, I998
`SECT10N8 & 15
`
`SAID RECORDS SHOW TITLE TO BE IN:
`
`REGISTRANT
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`
`
`M. K.HAKI
`
`NS
`
`Certifying Officer
`
`
`
`
`
`
`
`Vertex v. Nutrex
`
`Opp. No. 91-159280
`
`Opposer’s Ex. B
`
`
`
`..
`
` Ml Ill II
`
`
`
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`
`
`
`
`
`
`

`

`Int. CL: 5
`
`Prior U.S. Cls.: 6, 18, 44, 46, 51, and 52
`
`Reg. No. 2,201,590
`Registered Nov. 3, 1998
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`VERTEX
`
`VERTEX PHARMACEUTICALS INCORPORAT-
`ED (MASSACHUSETTS CORPORATION)
`130 WAVERLY STREET
`CAMBRIDGE, MA 021394242
`
`FOR: PHARMACEUTICAL PREPARATIONS,
`NAMELY, MULTI-DRUG RESISTANCE INHIBI-
`TORS AND PHARMACEUTICAL PREPARA-
`TIONS FOR THE DIAGNOSIS. TREATMENT
`OR PREVENTION OF CONDITIONS OR DIS-
`
`EASES OF THE CENTRAL NERVOUS SYSTEM
`AND PERIPHERAL NERVOUS SYSTEM.
`IN
`CLASS 5 (US. CLS. 6.
`[8, 44, 46, 51 AND 52).
`FIRST USE 10—24-1996;
`IN COMMERCE
`10—24-1996.
`
`SN 74-548.691, FILED 7-13-1994.
`
`LEIGH CAROLINE CASE. EXAMINING AT-
`TORNEY
`
`
`
`
`
`

`

`
`
`
`
`EXHIBIT C
`
`

`

`‘
`I
`\
`
`a
`
`‘
`‘- ‘v
`
`Swirl. Comma;
`UNITED STATES DEPARTMENT OF COMMERCE
`
`July 28, 2005
`
`: v
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 2, 704,913 IS
`
`_
`:5
`
`,
`
`5
`
`E
`
`9 ‘
`
`
`
`V
`l S
`CERTIFIED TO BE A TRUE COPY OF THE REGISTRATION ISSUED BY
`‘
`~
`THE UNITED STATES PATENT AND TRADEMARK OFFICE WHICH
`‘
`;
`REGISTRATION IS IN FULL FORCE AND EFFECT.
`.,
`
`
`
`United States Patent and Trademark Office
`
`
`
`Certifying Officer
`
`
`
`
`
`REGISTERED FOR A TERM OF 10 YEARS FROM April 08, 2003
`
`SAID RECORDS SHOW TITLE TO BE IN: Registrant
`
`
`
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`
`
` Vertex v. Nutrex
`
`Opp. No. 91-159280
`
`Opposer’s Ex. C
`
`
`
`
`
`

`

`
`
`Int. Cl.: 5
`
`Prior US. 05.: 6, 18, 44, 46, 51, and 52
`
`Reg. No. 2,704,913
`United States Patent and Trademark Office Registered Apr. 8, 2003
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`VERTEX
`
`VERTEX PHARMACEUTICALS INCORPORA-
`TED (MASSACHUSETTS CORPORATION)
`130 WAVERLY STREET
`
`CAMBRIDGE MA 021394242
`FOR: HOUSE MARK FOR PHARMACEUTICAL
`PREPARATIONS, IN CLASS 5 (US. CLS. 6, 18. 44, 46,
`51 AND 52).
`
`FIRST USE [0-24.1996; IN COMMERCE lO-24—l996.
`
`SN 75-567.953, FILED 10-9-1998.
`
`BRIDGETI' SMITH, EXAMINING ATTORNEY
`
`

`

`
`
`
`
`EXHIBIT D
`
`

`

`
`
`
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`.t‘I-
`
`
`
`
`
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`
`1
`
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`
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`r fi’—vri
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`
`WEB—.TAQJWEQMJ'EHWL‘E
`
`SHAWLJQ‘ELm
`
`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`July 28, 2005
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 2,5 78,974 IS
`
`CERTIFIED TO BE A TRUE COPY OF THE REGISTRATION ISSUED BY
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE WHICH
`
`REGISTRATION IS IN FULL FORCE AND EFFECT.
`
`REGISTERED FOR A TERM OF 10 YEARS FROM June 11, 2002
`
`SAID RECORDS SHOW TITLE TO BE IN: Registrant
`
`By Authority of the
`
`Certifying Officer
`
`
`
`Vertex v. Nutrex
`Opp. No. 91-159280
`
`a“H.191!
`
`I'o-snn
`
`Iy.‘
`
`
`
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`
`

`

`Int. Cls.: 5 and 42
`
`Prior U.S. Cls.: 6, 18, 44, 46, 51, 52, 100, and 101
`
`United States Patent and Trademark Office
`
`Reg. No. 2,578,974
`Registered June 11, 2002
`
`TRADEMARK
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`VERTEX
`
`
`
`VERTEX PHARMACEUTICALS INCORPORA-
`TED (MASSACHUSETTS CORPORATION)
`130 WAVERLY STREET
`CAMBRIDGE, MA 021394242
`
`FOR: PHARMACEUTICAL PREPARATIONS FOR
`THE DIAGNOSIS, TREATMENT OR PREVENTION
`OF CONDITIONS OR DISEASES OF THE CENTRAL
`NERVOUS SYSTEM OR PERIPHERAL NERVOUS
`SYSTEM, NEUROLOGIC DISORDERS, NEURODE-
`GENERATIVE DISORDERS, HEPATITIS-C, CAN-
`CER, MULTI-DRUG RESISTANCE,
`AUTOLMMUNE DISEASES, AND HIV INFECTION
`AND AIDS, IN CLASS 5 (US. CLS. 6, 18, 44, 46, 51
`AND 52).
`
`FIRST USE 4-26—1999; IN COMMERCE 4-26-1999.
`
`FOR: PHARMACEUTICAL RESEARCH SERVI-
`CES FOR OTHERS. IN CLASS 42 (US. CLS. 100
`AND 101).
`
`FIRST USE 2-23-1998; 1N COMMERCE 2-23-1998.
`
`OWNER OF US. REG. NOS. 1,630,448 AND
`1,630,449.
`
`SN 753335.578, FILED 7-31-1997.
`
`MARC LEIPZIG, EXAMINING ATTORNEY
`
`

`

`
`
`
`
`EXHIBIT E
`
`

`

`
`mom—.wmmuHI—msn-
`
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`
`
`
`
`
`
`
`July 26, 2005
`
`
`
`THIS IS TO CERTIFY THAT ANNEXED IS A TRUE COPY FROM THE
`
`RECORDS OF THIS OFFICE OF THE APPLICATION AS FILED FOR:
`
`TRADEMARK APPLICATION: 76/339,906
`
`FILING DATE: November 19, 2001
`
`
`
`
`
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`
`
`
`.' MONTGO
`
`RY
`
`Certifying Officer
`
` Vertex v. Nutrex
`
`Opp. No. 91-159280
`
`
`
`Opposer’s Ex. E
`
`
`
`
`
`
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`
`
`
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`
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`76339906
`
`TRADEMARK APPLICATION SERIAL NO.
`
`US. DEPARTMENT OF COMMERCE
`
`PATENT AND TRADEMARK OFFICE
`
`FEE RECORD SHEET
`
`./26/2001 NPETTY
`
`00000083 76339906
`
`. FC:361
`
`325.00 HP
`
`PTO- 1555
`
`(5/87)
`
`IibPDF -'Www.fastio.com
`
`'U.S. Government Printing Office: 2000 — 46623229119
`
`|
`
`Copy provided by USPTO from the TICRS Image Database on 07/20/2005
`
`

`

`
`125 SUMMER STREET BOSTON MA 02110-1618
`T 617 443 9292 F 617 443 0004 WWW.BROMSUN.COM
`
`
`lillUMlHiRG at SL'NSTILIX 111'
`
`jENNIFER M REYNOLDS
`
`T 617 443 9292 x361
`jREYNOLDS®BROMSUN.COM
`
`
`
`November 19, 2001
`
`VIA EXPRESS MAIL
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`Box NEW APP FEE
`
`Re Applicant:
`Mark:
`Attorney Docket No:
`
`Dear Sir:
`
`Vertex Pharmaceuticals Incorporated
`VERTEX (plus design)
`1618/227
`
`
`
`Enclosed please find the following documents in connection with the above-referenced
`application:
`
`(1)
`
`(2)
`
`Application for Trademark Registration, including one (1) drawing (with Certificate
`of Express Mail); and
`
`A check in the amount of $325 to cover the filing fee (with Certificate of Express
`Mail).
`
`Please confirm your receipt of these documents by stamping and returning to me the enclosed
`postcard. You are hereby authorized to charge any additional fees that may be required, or
`credit any overpayment, to deposit account no. 19-4972.
`
`Thank you for your attention to this matter.
`
`Very truly yours,
`
`alimwa
`
`M. Reynolds
`JMR/amd/tsnsm
`Enclosures
`
`cc: Michelle 0. Rosen, Esq.
`
`libPDF - www.fastio.com
`
`Copy provided by USPTO from the TICRS Image Database on 07/20/2005
`
`ATTORNEYS AT LAW
`
`$6
`
`

`

`Docket No. 1618/227
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION FOR TRADEMARK REGISTRATION
`
`MARK: VERTEX (plus design)
`
`INTERNATIONAL CLASS 5
`
`Vertex Pharmaceuticals Incorporated,
`
`a corporation organized under
`
`the laws of
`
`Massachusetts, and having a business address of 130 Waverly Street, Cambridge, Massachusetts
`
`02139—4242, requests registration of the trademark shown in the accompanying drawing, in the
`
`United States Patent and Trademark Office on the Principal Register established by the Act of July
`
`5, 1946 (15 U.S.C. 1051 et. seq., as amended), for the following goods: a house mark for
`
`pharmaceutical preparations.
`
`Applicant has a bona fide intent to use the mark in commerce on or in connection with the
`
`above-identified goods.
`
`‘
`
`Applicant is the owner of US. Registration Nos. 1,630,448, 1,630,449, and 2,201,590.
`
`Applicant is also the owner of US. Application Serial Nos. 75/333,578 and 75/567,963.
`
`
`
`
`EXPRESS MAIL CERTIFICATE
`
`EXpress Mail No: EL543493831US
`Date of Deposit: November 19 2001
`
`I hereby certify that this paper, and any attached papers, and/or fee is being deposited with the United States Postal
`Service "Express Mail Post Office to Addressee" service under 37 CFR 1.10 on the date indicated above and is addressed to
`the Commissioner of Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513, Box NEW APP FEE.
`In
`. Reynolds
`
`libPDF - www.fastio.com
`
`I
`
`Copy provided by USPTO trom the TICRS Image Database on 07/20/2005
`
`

`

`Please direct all communications pertinent to this application to:
`
`BROMBERG & SUNSTEIN LLP
`
`Attn: Jennifer M. Reynolds
`125 Summer Street
`
`Boston, MA 02110-1618
`
`(617) 443-9292
`
`libPDF - Www.fastio.com
`
`Copy provided by USPTO from the TICRS Image Database on 07/20/2005
`
`

`

`
`
`DECLARATION
`
`The undersigned being hereby warned that willful false statements and the like so made are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false
`
`statements mayjeopardize the validity ofthe application or any resulting registration, declares that
`
`he/she is properly authorized to execute this application on behalf of Applicant; he/she believes
`
`Applicant to be the owner ofthe trademark/service mark scught to be registered, or, ifthe application
`
`is being filed imder 15 U.S.C. 1051(b), lie/she believes Applicant to be entitled to use web mark in
`
`commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or
`
`association has the right to use the mark in commerce, either in the identical fonn thereof or in such
`
`near resemblance thereto as to be likely, when used on or in connection with the goods/services of
`
`such other person, to cause contbsion, or to cause mistake, or to deceive; and that all statements
`
`made of his/her own knowledge are true and all statements made on information and belief are
`
`believed to be true.
`
`VERTEX PHARMACEUTICALS INCORPORATED
`
`By:
`
`an
`Virginia C
`Senior Product Director
`
`(617) 444-6100
`
`WWW"IMOJ
`
`libPDF - WWw.fastio.com
`
`I
`
`Copy provided by USPTO from the TICRS Image Database on 07/20/2005
`
`

`

`ww
`
`1!1-1 9-2001
`1.9. hunt I: TMOt’cITM Mall Rent or. #22
`
`Applicant:
`
`Vertex Pharmaceuticals Incorporated
`130 Waverly Street
`Cambridge, Massachusetts 02139-4242
`
`Goods/Services in Class 5:
`
`A house mark for pharmaceutical preparations
`
`
`
`. VERTEX
`
`
`
`libPDF - www.fastio.com
`
`Copy provided by USPTO from the TICRS Image Database on 07/20/2005
`
`

`

`
`
`
`
`EXHIBIT F
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`RECEIVED
`
`VERTEX PHARMACEUTICALS INCORPORATED,
`
`JUN 2 0 2005
`
`Opposen
`
`v.
`
`NUTREX RESEARCH, |NC.,
`
`Applicant.
`
`BROMBERG & SUNSTEN
`
`Opposition No. 91159280
`Serial No. 78/201055
`
`APPLICANT’S RESPONSES TO OPPOSER’S FIRST REQUEST FOR ADMISSIONS
`
`I
`
`Applicant Nutrex Research,
`
`(“Nutrex”) hereby responds, number by
`1
`I,
`corresponding number, to Vertex Pharmaceutical, |nc.’s (“Opposers ) First Request for
`
`Inc.
`
`Admissions.
`
`These responses are made pursuant to Rule 36 Fed. R. Civ. P. and TBMP § 407,
`
`solely for the purposes of this opposition proceeding.
`
`GENERAL OBJECTIONS
`
`Nutrex objects to each request to the extent it seeks information protected by the
`
`attorney-client privilege or work product doctrine, or any other applicable privilege.
`
`Nutrex further objects to each request on the grounds that it is overbroad in time or
`
`scope, oppressive, vague, ambiguous, harassing and unduly burdensome.
`
`Nutrex further objects to each request to the extent that it seeks information that is
`
`not relevant to the subject matter of this opposition proceeding and is not likely to lead to
`
`the discovery of admissible evidence herein.
`
`Nutrex incorporates by reference each of the foregoing general objections set forth
`
`
`
`Vertex v. Nutrex
`
`Opp. No. 91-159280
`
`Opposer’s Ex. F
`
`

`

`herein above into each reSponse set forth below.
`
`Without waiving the foregoing objections, Nutrex responds to the requests as
`
`follows:
`
`OBJECTIONS AND RESPONSES
`
`1.
`
`That Applicant currently advertises, promotes, distributes, offers for sale,
`
`and/or sells in interstate commerce a dietary supplement bearing The Mark VITRIX.
`
`Response: Assuming the term “dietary supplement” is used as that term is defined in the
`
`Dietary Supplement Health and Education Act of 1994, Applicant admits that it advertises,
`
`promotes, distributes, offers for sale, and/or sells in interstate commerce a dietary
`
`supplement bearing the mark VITRIX.
`
`For any other meaning of the term “dietary
`
`supplement," this request is denied.
`
`2.
`
`That a true and accurate depiction of an example of a label used on the
`
`VlTRlX Product is found at Ex. A.
`
`Response: Nutrex admits that the photocopy of the label shown in Ex. A appears to be
`
`a copy of the label that appears on a VITRIX Product bottle.
`
`3.
`
`The first sale in interstate commerce by Applicant of the VITRIX Product
`
`occurred in April 2003.
`
`Response: Admitted.
`
`4.
`
`That in 2004, Applicant sold 69,352 bottles of the VITRlX Product.
`
`

`

`
`
`Response: Nutrex admits that the figure represents its gross sales for 2004 as the total
`
`sales were known in the first week in January 2005; otherwise, this request is denied.
`
`5.
`
`That each bottle of the VITRIX Product Applicant sold in 2004 displayed the
`
`label found at Ex. A.
`
`Response: Admitted.
`
`6.
`
`That
`
`in 2004, Applicant's gross sales of the VITRIX Product equaled
`
`$1,340,276.30.
`
`Response: Nutrex admits that this figure represents its gross sales for 2004 as the total
`
`sales were known in the first week in January 2005; otherwise, this request is denied.
`
`7.
`
`That in 2004, Applicant had total sales of $7,098,729.08.
`
`Resppnse: Nutrex objects to this request in that it seeks facts regarding products other
`
`than the VITRIX Product that is the subject of this opposition proceeding, and are therefore
`
`not relevant to this proceeding.
`
`8.
`
`That the document found at Ex. B contains true and accurate totals for the
`
`sales of dietary supplements by Applicant during 2004.
`
`Response: Nutrex objects to this request in that it seeks facts about products other than
`
`the VITRIX Product that is the subject of this opposition proceeding, and are therefore not
`
`relevant to this proceeding.
`
`
`
`

`

`
`
`9.
`
`That the document found at Ex. B is a record and/or a data compilation of
`
`Applicant’s sales activity during 2004, made at or near the time by, or from information
`
`transmitted by, a person with knowledge and kept by Applicant in the course of its regularly
`
`conducted business.
`
`Response: Admitted.
`
`10.
`
`That it is the regular practice of Applicant to generate the document found
`
`at Ex. B.
`
`Response: Denied.
`
`11.
`
`The Applicant's marketing material for the VITRIX Product contains claims
`
`that the product is a natural testosterone stimulator.
`
`Response: Admitted.
`
`12.
`
`That Applicant’s marketing material for the VITRIX Product contains claims
`
`that the product is a means to restore subnormal testosterone levels.
`
`Response: Nutrex admits that its marketing materials claim that its VITRIX Product
`
`“restores subnormal testosterone levels lost due to prohormone use or age.” As to any
`
`other meaning, this request is denied.
`
`13.
`
`A true and accurate depiction of Applicant’s Special Edition 2004 Catalog is
`
`found at Ex. C.
`
`

`

`Resppnse: Admitted.
`
`14.
`
`That the document found at Ex. C is a directory or other published
`
`compilation generally used and relied upon by the public or by persons in the field of
`
`dietary supplements or sports nutrition.
`
`Response: Nutrex objects to this request on the ground that it is vague and ambiguous,
`
`specifically as to the phrase “field of dietary supplements" or “sports nutrition.” Nutrex
`
`admits that its distributors and clients, who are primarily bodybuilders, use the catalog
`
`shown as Ex. C. However, Nutrex lacks knowledge as to who else may use the document
`
`in Ex. C and in what fields they may be engaged, and to that extent the request is denied.
`
`15.
`
`The document found at Ex. D is a true and accurate representation of
`
`Applicant’s website as it‘appeared on May 3, 2005.
`
`Response: Admitted.
`
`16.
`
`That the document found at Ex. D is a directory or other published
`
`compilation generally used and relied upon by the public or by persons in the field of
`
`dietary supplements or sports nutrition.
`
`Response: Nutrex objects to this request on the ground that it is vague and ambiguous,
`
`specifically as to the phrase “field of dietary supplements” or “sports nutrition.” Nutrex
`
`admits that its distributors and clients, who are primarily bodybuilders, use the catalog
`
`shown as Ex. C. However, Nutrex lacks knowledge as to who else may use the document
`
`
`
`

`

`in Ex. C and in what fields they may be engaged, and to that extent the request is denied.
`
`17.
`
`That the VITRIX Product is sold in capsule form.
`
`Response: Admitted.
`
`18.
`
`That vitamin pills are dietary supplements.
`
`Response:
`
`lf “vitamin pills” mean “vitamins” as they are defined by the Dietary
`
`Supplement Health and Education Act (“DSHEA”), Nutrex admits that vitamins are one
`
`category of dietary supplement as that term is defined in DSHEA.
`
`19.
`
`That there are herbal teas that may be sold as dietary supplements.
`
`Resppnse: Nutrex admits herbs are one category of dietary supplement under DSHEA.
`
`Othenrvise, Applicant lacks sufficient information to admit or deny this request, and thus
`
`denies this request.
`
`20.
`
`That protein powders are dietary supplements.
`
`Response: After a reasonable inquiry, N utrex lacks sufficient information to admit or deny
`
`this request, and thus denies this request.
`
`21.
`
`That dietary supplements may be purchased in Costco stores.
`
`Response: Applicant admits that vitamins and minerals, as defined by the DSHEA. are
`
`categories of dietary supplements, and that certain of these may be purchased at Costco
`
`
`
`
`
`

`

`stores. Otherwise, Applicant lacks sufficient information to admit or deny that dietary
`
`supplements in general may be purchased in Costco stores, and thus denies this request.
`
`22.
`
`That dietary supplements may be purchased in Sam's Club stores.
`
`Respgnse: Nutrex admits that vitamins and minerals as defined by the DSHEA, are
`
`categories of dietary supplements, and that certain of these may be purchased at Sam’s
`
`Club stores. Otherwise, Nutrex lacks sufficient information to admit or deny that dietary
`
`supplements in general may be purchased in Sam’s Club stores, and thus denies this
`
`request.
`
`23.
`
`That dietary supplements may be purchased in pharmacies.
`
`Response: Nutrex admits that vitamins and minerals as defined by the DSHEA, are
`
`categories of dietary supplements, and that certain of these may be purchased at
`
`pharmacies. Othewvise, Nutrex lacks sufficient information to admit or deny that dietary
`
`supplements in general may be purchased in pharmacies, and thus denies this response.
`
`24.
`
`That documents found at Ex. E show that products containing tribulus
`
`terrestris are offered for sale by CVS Pharmacy Online over the Internet.
`
`Respgnse: Admitted.
`
`25.
`
`That the VITRIX Product contains tribulus terrestris.
`
`Respgnse: Admitted.
`
`
`
`
`
`
`
`

`

`26.
`
`That Novartis AG is a pharmaceutical company,
`
`Response: Admitted.
`
`
`
`27.
`
`That the documents found at Ex. F show that Novartis AG markets dietary
`
`supplements.
`
`Response: Since the documents comprising Ex. F are those of Novartis Medical Nutrition
`
`U.S., Applicant lacks sufficient knowledge to admit or deny whether the documents are
`
`related to Novartis AG, and thus denies same.
`
`
`
`28.
`
`That the VITRIX Product is a sports nutrition product.
`
`Response: Nutrex objects to this request on the basis that the term “sports nutrition
`
`product” is ambiguous because it lacks any commonly accepted meaning. As a result of
`
`this ambiguity,
`
`it is unknown whether VITRIX is a sports nutrition product. Hence, the
`
`request is denied.
`
`29.
`
`That the VlTRlX Product is a dietary supplement.
`
`Response: As the term “dietary supplement” is defined in DSHEA,
`
`this request is
`
`admitted.
`
`30.
`
`That the documents founds at Ex. G show that sports nutrition products are
`
`offered for sale by CVS/pharmacy® and/or Walgreens.com® over the internet.
`
`Response: Since the documents at Ex. G show a search for “sports supplement,”
`
`

`

`I.
`
`r
`
`I
`
`Applicant lacks sufficient knowledge as to whether this term was intended to mean “sports
`
`nutrition products.” Therefore, the request is denied.
`
`31.
`
`That the documents found at Ex. G show that dietary supplements are
`
`offered for sale by CVS/pharmacy® and/or Walgreenscom® over the internet.
`
`Response: Since the documents at Ex. G show a search for “sports supplement,”
`
`Applicant lacks sufficient knowledge as to whether these mean “dietary nutrition products.”
`
`Therefore, the request is denied.
`
`32.
`
`That Applicant’s Trademark Application does not contain any explicit
`
`limitation on the customers for Applicant’s VITRIX Product.
`
`Response: Admitted.
`
`33.
`
`That Applicant’s Trademark Application does not contain any explicit
`
`limitation on the intended end-users of the VITRIX Product.
`
`Response: Admitted.
`
`34.
`
`That Applicant’s Trademark Application does not contain any explicit
`
`limitation on the channels for trade of the VITRIX Product.
`
`Response: Admitted.
`
`

`

`l
`
`i
`
`v
`
`‘c
`
`l
`
`,*
`
`
`
`Respectfully submitted,
`
`%va K. Doppelt, Esguire
`
`Linda C. Dolan, Esquire
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P. A.
`255 South Orange Avenue
`Suite 1401
`
`Orlando, Florida 32801
`Phone: 407 841-2330
`
`Fax: 407 841-2343
`
`Email: adoppelt@addmg.com
`Attorney for Applicant
`Nutrex Research, Inc.
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and correct copy of the foregoing was served by US. mail on
`June 15, 2005 to:
`
`Lisa M. Tittemore, Esquire
`John F. Ward, Esquire
`Bromberg & Sunstein, LLP
`125 Summer Street
`
`11th Floor
`
`Boston, MA 02110-1618
`
`6.
`
`8g ature
`
`10
`
`
`
`

`

`
`
`EXHIBIT G
`
`

`

`
`
`EXHIBIT H
`
`

`

`
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